WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hero Moto Corp Limited v. Domains By Proxy, LLC / Sweety Patel
Case No. D2018-1480
1. The Parties
The Complainant is Hero Moto Corp Limited of New Delhi, India, represented by Rahul Chaudhry & Partners, India.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Sweety Patel of Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <heromotocorps.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2018. On July 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant first filed an amended Complaint on July 9, 2018. The Complainant filed a second amended Complaint on July 13, 2018, to correct an administrative formality.
The Center verified that the Complaint together with the amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 6, 2018.
The Center appointed Maninder Singh as the sole panelist in this matter on August 14, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Incorporated in 1984, the Complainant is a leading manufacturer of motorcycles and scooters. The trademark HERO was adopted as a trademark in the year 1950 by Hero Group of companies. For the trademark and trade name HERO and HERO MOTOCORP, the Complainant claims to be the owner of numerous trademark registrations in various classes, in India. E.g., Indian trademark registration no. 605248 HERO, registered on August 26, 1993, and Indian trademark registration no. 2146781 HERO MOTOCORP, registered on May 19, 2011. According to the Complainant, the trademark HERO is well known globally and enjoys immense goodwill and reputation of international character. The Complainant is also stated to be the exclusive owner of the domain name <heromotocorp.com>.
The Respondent has chosen not to submit any response to the contentions raised in the Complaint. In the absence of a Response there is no information available about the Respondent.
The disputed domain name was registered on June 7, 2018. According to the Complaint and relevant evidence, the disputed domain name resolved to a website that copied the contents of the Complainant's official website at "www.heromotocorp.com".
5. Parties' Contentions
The Complainant in its Complaint has, inter alia, raised the following contentions:
The Complainant claims that trademark HERO was adopted as a trademark in 1950 by Hero Group Companies. One of the Complainant's Group's companies, i.e., Hero Investcorp Private Ltd. is stated to have been incorporated in 1981, inter alia, with the objective to apply for, register, own, develop, create, purchase or by other means acquire and protect, renew any trademarks, patents or any other intellectual property rights. The Complainant claims that the word "Hero" forms the forepart and most distinguishing feature of the Complainant's corporate name and trading style and the name of some of the Complainant's other group companies, all of whom are using the name "Hero" with the permission/authority/license from Hero Investcorp Private Ltd.
The Complainant, incorporated in the year 1984, claims to be the No. 1 two-wheeler manufacturer company in the world having a market share of 36.9 percent in the domestic two-wheeler market and a market share of 51.1 percent in the domestic motorcycle market. The Complainant claims to have its annual revenue figures in billions of rupees.
The Complainant also claims to have its presence in 35 countries. The Complainant claims to market, sell and advertise its products under the marks HERO and HERO MOTOCORP, which is also a part of its tradename.
The Complainant claims to have invested enormous amounts of money into its advertising and promotional activities. The annual advertising expenditure is stated to be in many millions of rupees. The Complainant claims that by virtue of several registrations, continuous and extensive usage, vast publicity and excellent quality of the goods and services, the trademarks HERO and HERO MOTOCORP have acquired enormous reputation and goodwill. The Complainant claims that customers/general public and members of the trade recognize the marks HERO and HERO MOTOCORP with the Complainant and other Hero Group of companies only.
The Complainant claims to have been the registered proprietor of the trademark/name HERO and HERO MOTOCORP in several classes in India. The Complainant also claims that its mark HERO is registered globally in around 122 countries. The Complainant also claims to own the domain name <heromotocorp.com>, which is used for the purpose of giving public access, showcasing information about the products and services of the Complainant.
The Complainant contends that the Respondent has dishonestly, malafidely and unauthorizedly registered the domain name <heromotocorps.com> wherein the well-known marks HERO and HERO MOTOCORP as well as the corporate name of the Complainant Hero MotoCorp Ltd. have been prominently used.
Contentions of the Complainant regarding the disputed domain name being identical or confusingly similar to the Trademark or Service Mark of the Complainant:
- In order to show that the disputed domain name <heromotocorps.com> is identical or confusingly similar to the Complainant's mark, the Complainant contends that the Respondent's domain name encompasses the whole of the Complainant's registered trademarks HERO, HERO MOTOCORP as well as the entire content of website <heromotocorp.com> along with its corporate name Hero MotoCorp Ltd.
- The Complainant further contends that the disputed domain name <heromotocorps.com> has copied entirely and is identical to the Complainant's website "www.heromotocorp.com" with the addition of the letter "S". It has been contended that the identical interface of the Respondent's website reinforces the association with the Complainant's mark HERO by showing that the disputed domain name is originating from the Complainant or is associated with the Complainant and its group company Hero MotoCorp Ltd. The Complainant further contends that the Respondent has not only created an identical website but has also created fraudulent email addresses including the disputed domain name in the format "[…]@heromotocorps.com" to divert unwary public with an intention to mislead and cause consumer confusion.
- The Complainant contends that the addition of the letter "S" in complainant's domain name <heromotocorp.com> does not distinguish the disputed domain name, the disputed website and/or the Respondent distinguishable from the Complainant.
- The Complainant further contends that the Respondent, through registration of an identical domain name, is continuously infringing the trademark as well as the copyright of the Complainant with an attempt to mislead and dupe the unwary consumers, trade partners, other stakeholders and members of the general public into believing that that there is some connection or link between the Complainant and the Respondent, the Complainant is likely to suffer an irreparable harm in terms of reputation and money.
Contentions regarding the Respondent having no rights or legitimate interests in the disputed domain name:
- The Complainant contends that the Respondent neither has any legitimate interest in the trademark HERO, HERO MOTOCORP or the corporate name "Hero MotoCorp Limited" nor is the lawful owner of any right relating to the Complainant group's marks. The Respondent bears no relationship to the business of the Complainant and is neither a licensee nor has obtained authorization of any kind to use the Complainant group's marks. The Respondent is also not commonly known by the disputed domain name.
- The Complainant also contends that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name <heromotocorps.com>. The Respondent registered the disputed domain name on June 7, 2018, i.e., long after the registrations of the Complainant's trademarks. The Complainant registered the domain name <heromotocorp.com> on May 17, 2011 thereby establishing its rights in the above-mentioned trademarks through extensive use of the same around the world as well as establishing its copyright in the website. Given that the Complainant's adoption and extensive use of the HERO, HERO MOTOCORP marks, the domain name and the corporate name of its company Hero MotoCorp Ltd. predates the Respondent's registration of the disputed domain name, the burden is on the Respondent to establish its rights or legitimate interests in the disputed domain name.
- The Complainant further contends that the Complainant never authorized or permitted the Respondent's registration of the disputed domain name incorporating the Complainant group's trademarks HERO/HERO MOTOCORP and its corporate name Hero MotoCorp Limited and website content.
Contentions regarding bad faith registration and use of the disputed domain name by the Respondent:
- The Complainant contends that the Respondent has registered and/or acquired the disputed domain name as well as has created an identical website with a dishonest intention to either mislead and/or divert the consumer/trade channels and the public at large or to sell the said domain name to the Complainant for profit.
- The Complainant further contends that it also appears that the Respondent may have registered the disputed domain name with the intention of raging a cyber-attack on the Complainant in a bid to extort monetary benefit from its illegal and unethical activities.
- The Complainant contends that the respondent has deliberately, dishonestly and in a malafide manner copied and used the identical web pages, logos etc. on the website at the disputed domain name so as to give it the layout and appearance of the official website of the Complainant with the intention to defraud and cheat the customers, dealers and other relevant stakeholders of the Complainant. The website provides for an online platform to the prospective dealers to apply for the dealership/franchisee of the Complainant. There is a likelihood that the Respondent by using the website may cheat and defraud the prospective dealers/customers in the garb of providing alleged dealership of the Complainant.
- The Complainant contends that from the content, interface, layout of the website "www.heromotocorps.com" it is apparent that the Respondent registered the disputed domain name to mislead the visitors/unwary consumers/trade channels and public at large into believing that the disputed website originates from the Complainant. The use and registration of the identical domain name and website in an effort to gain commercial benefit is evidence of bad faith. The Respondent's bad faith is further evidenced from the fact that the disputed domain name was created as a private registration in order to conceal the identity of the true Registrant and to ensure that the Complainant cannot identify the actual entity and/or individual behind the disputed domain name.
- The Complainant further contends that the Respondent is trying to trade upon the goodwill, reputation and fame of the Complainant in an unauthorized manner, dishonestly and in a malafide manner using identical domain name with identical copyrighted content and HERO, HERO MOTOCORP trademarks as well as the corporate name Hero MotoCorp Limited in order to improperly cheat and deceive Internet users, potential consumers, trade partners and for benefit of the Respondent financially by illegitimate and fraudulent means. These activities demonstrate bad faith registration and use of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has furnished evidence of its rights in the trademarks HERO and HERO MOTOCORP through its above-referred trademark registrations and common law rights have accrued to it through its long and substantial use of the mark not only in India but certain other parts of the world.
The Panel has considered the documents submitted by the Complainant in support of its claim that the Complainant has been using and has various registrations for the trademark using the words "Hero", and "Hero MotoCorp". The Panel observes that the Complainant has spent huge sums of money for advertisement and promotional activities in India and abroad. There does not appear to be any doubt that the Complainant is the owner of trademarks HERO and HERO MOTOCORP.
The Panel has no doubt that the Complainant has rights in the marks HERO, HERO MOTOCORP and the registration and use of the mark by suffixing the letter "S" to it has been done by the Respondent. It is the firm and definite view of the Panel that the addition of the letter "S" in the disputed domain name <heromotocorps.com> to the Complainant's trademark HERO MOTOCORP would not prevent a finding of confusing similarity. The domain name of the Respondent would remain confusingly similar to the trademark and domain name of the Complainant.
In this regard attention of the Panel has been drawn to certain UDRP decisions. In the case of Statoil ASA v. Registration Private, Domains by Proxy, LLC/Andreas Skaare, WIPO Case No. D2017-2488, it had been held that the two disputed domain names <statoil-solar.com> and <statoilsolar.com> both incorporated the mark STATOIL and, for the purposes of assessing confusing similarity, the suffix – "solar" is to be disregarded.
Similarly, in the cases of PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2009-0009, the panel had observed that it is a well-established principle that the addition of descriptive or non-distinctive terms to a complainant's trademark in a domain name does not dispel confusing similarity.
The Panel, therefore, concludes that the domain name <heromotocorps.com> registered by the Respondent by adding the letter "S" to HERO MOTOCORP, is confusingly similar to the trademarks of the Complainant and the Complainant has therefore succeeded in establishing the first element of the test in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel has no doubt that the disputed domain name incorporates the trademark HERO MOTOCORP of the Complainant by adding letter "S" to it. The Respondent has chosen not to submit any reply to contradict the case of the Complainant. There is no response and/or documents to prove that the Respondent has registered the disputed domain name having legitimate rights in it.
The Panel observes that the Complainant has made out a case proving its rights in the trademarks HERO and HERO MOTOCORP. The Complainant enjoys goodwill and reputation for the marks/names registered by it. The Panel is of the view that such an attempt on the part of the Respondent is to create confusion and to cash on/ride over the trademarks, goodwill and reputation of the Complainant.
The Panel observes that the Respondent is in no way related to the Complainant or its business activities, the Respondent is not an agent of the Complainant, nor does he carry out activities for the Complainant.
The Panel refers to decision in Bumble & Bumble LLC v. Gladyshev, WIPO Case No. D2008-1956 observing that – "The Respondent's use of a domain name incorporating the Complainant's distinctive BUMBLE AND BUMBLE mark in its entirety, and the further use of the Complainant's mark on the website improperly, suggest that the site is affiliated with the Complainant and that the Respondent is authorized to sell the Complainant's line of hair care and beauty products".
Here, the Respondent's website copies that of the Complainant, giving the misleading impression that the Respondent is, or is affiliated with the Complainant. Such use of the disputed domain name does not confer rights or legitimate interests onto the Respondent.
In the facts and circumstances of the present case, the Panel has no difficulty in accepting that the Respondent failed to evidence or explain any bona fide use of the disputed domain name as it has failed to submit any response to the contentions made by the Complainant. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel observes that there is virtually no possibility that the Respondent was unaware of the Complainant's trademark, its existence or presence in the market. In this regard, the Panel refers to and relies upon to the decision Consitex S.A. Lanificio Ermenegildo Zegna & Figli S.p.A. Ermenegildo Zegna Corporation v. Mr. Lian Ming, WIPO Case No. DWS2003-0001 holding that a Respondent could not ignore the existence of a well-known trademark at the time of registering a domain name. Moreover, the contents of the Respondent's website clearly indicate that the Respondent was targeting the Complainant and its trademark at the time the disputed domain name was registered.
The Panel has accepted the contention of the Complainant that the Respondent has registered the disputed domain name with the intention to mislead and/or divert the consumers/trade channels and the public at large.
The Panel, in these facts, observes that the trademarks of the Complainant HERO and HERO MOTOCORP are well known not only in India but also in various parts of the world and there is every likelihood of Internet users of the disputed domain name of the Respondent believing that there is some connection, affiliation or association between the Complainant and the Respondent thereby extracting undue gains to the Respondent and further having the effect of damaging the goodwill, reputation and business interests of the Complainant.
The Panel, therefore, finds that the disputed domain name was registered and is being used in bad faith by the Respondent.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <heromotocorps.com> be transferred to the Complainant.
Date: August 24, 2018